Wednesday, September 05, 2018

[This guest post was written by Ryan Van Olst, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a Section 2(d) refusal to register the mark AMERICA’S HOMETOWN PIZZA PLACE in standard characters (PIZZA PLACE disclaimed), finding the mark likely to cause confusion with the registered mark HOMETOWN PIZZA, in standard characters (PIZZA disclaimed), both for restaurant services. Applicant relied on eight third-party registrations and four applications in claiming that the cited mark was entitled to only a narrow scope of protection, but the Board was not persuaded. In re Pizza Inn, Inc., Serial No. 87173595 (August 27, 2018) [not precedential] (Opinion by Judge David K. Heasley).

The Services: Because the services at issue were legally identical, the channels of trade and classes of purchasers were presumed to be the same. Thus the Board found that the second and third duPont factors weighed “heavily” toward finding a likelihood of confusion.

Strength of the Cited Mark: Applicant relied on eight use-based, third-party registrations and four applications to show that the registered mark was comprised of weak, commonly used elements, and to urge that Applicant’s mark should be capable of coexistence with the cited mark.

The Board observed that “[t]hird parties’ registration and use of similar marks can bear on the strength or weakness of a registrant’s mark in two ways: commercially and conceptually.” If a mark or element of a mark is used extensively, this can undermine its commercial strength because consumers "may have become familiar with a multiplicity of the same or similar marks, and can distinguish them based on minor differences." Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). If there is evidence that a mark or element of a mark is commonly registered by third parties, “that may indicate that the common element has some significance that undermines its conceptual strength as an indicator of a single source.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).

Because Applicant did not submit evidence of actual use of the third-party marks, the Board treated the commercial strength of the cited mark as neutral.

The true issue here is whether Applicant’s third-party evidence demonstrates that the cited registered mark, HOMETOWN PIZZA, is so weak conceptually that it may be distinguished by the additional wording AMERICA’S and PLACE. We find that it does not.

As to the third-party registrations, the Board pointed out that two of the third-party registrations cited by Applicant had been cancelled and were consequently irrelevant. As for the six remaining registrations and the four third-party applications, the Board observed that none contained the wording HOMETOWN PIZZA, in contrast to the marks at issue. Moreover, this number was far fewer than the 14 relevant third-party uses and registrations in Jack Wolfskin, and the 26 cited in Juice Generation.

Therefore the Board concluded that the cited mark HOMETOWN PIZZA should be accorded “the normal scope of protection to which suggestive marks are entitled” and it found the sixth duPont factor to be neutral.

The Marks: In assessing the level of similarity between the marks, the Board acknowledged that “the leading and last terms in Applicant’s mark create some differences[,]” but found these differences insufficient to prevent a likelihood of confusion in light of the overlap between the marks. The Board observed that “[w]hile there is no rule that likelihood of confusion automatically applies where one mark encompasses another . . . the fact that the entire cited mark is incorporated in Applicant’s mark increases the similarity between the two.” The geographic significance of AMERICA’S and the descriptive significance of PLACE undermined Applicant’s contention that these terms sufficiently distinguished its mark from the cited registration.

The Board was also not moved by Applicant’s argument that consumers would understand the registered mark as referring to a pizza while the applied-for mark referred to a place. Instead, the Board found the additional terms AMERICA’S and PLACE actually complemented the existing connotation and laudatory impression of the cited HOMETOWN PIZZA registration, and it observed that consumers may easily construe the registration as a shortened version of Applicant’s mark. Thus, the Board found that the first duPont factor also weighed in favor of a likelihood of confusion.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely, and so it affirmed the Section 2(d) refusal.

2 Comments:

As a side note, the Board refused to consider two of the third-party registrations relied upon by applicant. But those two registrations were cancelled after briefing was complete, so clearly the Board took it upon itself to check the status of the third-party registrations at the time it was preparing its opinion. This seems odd since the Board’s general practice is not to take judicial notice of third-party registrations and, moreover, Section 1208.02 of the TBMP explicitly states that “the Board will not take judicial notice of status changes in third-party applications in terms of whether such applications eventually issued to registration.” So the Board will not take judicial notice of status changes in third-party applications but it will for registrations – is that the rule?

The Board is more loosey-goosey with the evidentiary rules in ex parte cases. BTW: see the CAFC's decision (March 2018) in the Prince of Wales insignia case, where the appellate court directed the Board to take judicial notice of certain PTO file history documents. I believe there is another CAFC case from a few years ago where the CAFC took judicial notice of third-party registrations, but I can't recall which case.